The opinion of the court was delivered by: Richard J. Holwell, District Judge
MEMORANDUM OPINION AND ORDER
Before the Court is defendant Brookwood Companies, Inc.'s ("Brookwood") renewed motion for summary judgment that a certain patent held by plaintiff Nextec Applications, Inc. ("Nextec") is invalid as anticipated by prior art. Nextec concedes that the alleged prior art teaches every element of the patent at issue but argues that the patent is entitled to a filing date earlier than the filing date of the prior art. Because issues of fact exist as to whether Patent No. 5,004,643 discloses the use of non-polymers in practicing that invention, summary judgment as to Patent No. 5,954,902's invalidity is inappropriate and Brookwood's motion is DENIED.
The Court presumes familiarity with the underlying facts of this case, and summarizes the facts relevant to this opinion as follows:*fn1
Nextec manufactures various patented breathable water-resistant fabrics. Nextec holds several patents covering the fabrics it makes, the methods of making those fabrics, and the systems for making the fabrics. Nextec's fabrics are sold to garment manufacturers that use the fabrics to produce a variety of consumer and military goods, including windshirts, parkas, and tents. Nextec's fabrics are produced by taking them through a fabric coating operation. Broadly speaking, that operation consists of rollers that pull the fabric through a machine, somewhat similar to a movie projector threading a film through a reel. At one point in the process, there is a blade or knife that is positioned transverse to the fabric. A coating composition is deposited in front of the blade, and the blade is then used to apply the composition to result in treatment of the fabric. A series of parameters in this coating operation can be adjusted to achieve the desired fabric properties, including: the tension of the fabric, the speed of the fabric, the sharpness of the blade, the depth of the blade as it impacts the fabric, the makeup and rheology of the coating composition, and the weave of the fabric.
Nextec has filed several patent applications including Application Serial Number 167,630 (the "'630 application"), and is the assignee of several patents, including United States Patent Nos. 5,004,643 (the "'643 patent") and 5,954,902 (the "'902 patent").*fn2 The '630 application, filed on March 14, 1988, is titled "Saturation and Rheology-Controlled Impregnation of a Web." The application states that it "teaches a method of controlled saturation and impregnation of webs, typically fabrics, with viscous materials, typically polymers." U.S. Patent Application Serial No. 167,630 (filed Mar. 14, 1998). The '643 patent, filed on March 10, 1989, is titled "Silicone Polymer-Internally Coated Webs." The invention is summarized in the Abstract as follows:
An improved process is provided for treating a porous web (especially fabric) to produce a novel silicone polymer internally coated web. In the process, a starting curable liquid silicone polymer is coated under pressure upon one surface of the web, and the web is then subjected to localized shear forces sufficient to move the silicone polymer composition into interior portions of the web and to distribute the silicone polymer composition generally uniformly therwithin [sic] in such planar region. Excess silicone polymer composition is wiped away from a web surface. Thereafter, the resulting web is heated or irradiated to cure the silicone polymer. Preferably a web is preliminarily impregnated with a fluorochemical. Webs procuded [sic] by this process are breathable, waterproof or highly water repellent, and flexible.
U.S. Patent No. 5,004,643, at  (filed Mar. 10, 1989). The '902 patent, filed on June 7, 1995, is titled "Controlling the Porosity and Permeation of a Web." The invention is summarized in the Abstract as follows:
Products and methods for controlling the porosity and permeation of a web are provided using a curable thixotropic shear thinnable polymer composition that preferably encapsulates a plurality of fibers of the web and/or forms an internal layer within the web. Webs suitable for several different uses are featured, for example medical garments resistant to permeation by a virus or bacteria. The effective pore size of the web is controlled by regulating various factors such as the thickness of the polymer composition encapsulating the fibers and the thickness and placement of the internal polymer layer. Other factors include the polymer density, structure, and crosslinking orientation, as well as the diffusion, permeation, and sorption of the polymer.
U.S. Patnet. No. 5,954,902, at  (filed June 7, 1995). Though mentioning only polymeric compositions in its abstract, the '902 patent's specification is not limited to polymers. Instead, under the subheading "Curable Thixotropic Materials" the patent provides as follows: "In general, any curable, thixotropic material may be used to treat the webs of the present invention. Such materials are preferably polymers, more preferably silicone polymers." '902 Patent col. 6 ll. 40-43. The patent claims its earliest filing date in the United States Patent and Trademark Office ("USPTO") from the '630 application, that being March 14, 1998. That filing date is claimed through a chain of applications and patents that includes the '643 patent, filed on March 10, 1989.*fn3
Brookwood is a competitor of Nextec in the sale of certain products that are at issue in this action. Brookwood, through its affiliates, has been using coating equipment to coat textile fabrics for over forty years. In 2006, Brookwood was approved to supply garments to the United States military that meet the specifications of the military's extreme cold weather garment clothing system, known as "Generation III" or "Gen III." At that time, Nextec was already an approved supplier to the government under the Gen III program. The present dispute arose not long after Brookwood began supplying coated fabrics to government sub-contractors as part of the Gen III program. The Brookwood products at issue are known as the Agility Storm-Tec X-Treme and Eclipse Storm-Tec XTreme products (collectively, the "Storm-Tec Products"). They were produced on a coating apparatus known as the "KK-1 coating apparatus" or the "KK-1 coater" at a Kenyon, Rhode Island facility operated by a Brookwood affiliate, Kenyon Industries.
Nextec filed the present lawsuit in July 2007, accusing the Storm-Tec Products of infringing various Nextec patents. On July 17, 2009, the parties filed cross-motions for summary judgment. On March 31, 2010, the Court granted in part and denied in part those motions, including denying Brookwood's motion that the '902 patent was invalid on the grounds that it was anticipated by prior art. As relevant here, the Court held that an issue of fact existed as to whether the '630 Application adequately described the use of non-polymeric curable thixotropic shear thinnable materials for coating purposes. Nextec Applications v. Brookwood Cos., Inc., 703 F. Supp. 2d 390, 434 (S.D.N.Y. 2010). Specifically, the Court found that the '630 application's language covering "a method of controlled saturation and impregnation of webs, typically fabrics, with viscous materials, typically polymers," U.S. Patent. Application Serial No. 167,630 (filed Mar. 14, 1988) (emphasis added), suggested that the use of "any curable, thixotropic material," '902 Patent col. 6 l. 40 (emphasis added), for coating was possible in practicing the '630 application's invention. Nextec, 703 F. Supp. 2d at 433-34.*fn4 The Court did not, however, consider whether all of the patents and applications in the priority chain to the '630 application, including the '643 patent, adequately described the use of ...